THIS AGREEMENT CONTAINS CONFIDENTIAL TERMS WHICH HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION
LICENSE AGREEMENT
between
IOMED, INC.
and
UNIVERSITY OF UTAH RESEARCH FOUNDATION
TABLE OF CONTENTS
Article No..................................................................................................Page No.
1. DEFINITIONS................................................................................................2
2. GRANT......................................................................................................3
3. ROYALTIES..................................................................................................4
4. CONFIDENTIALITY............................................................................................4
5. BOOKS AND RECORDS..........................................................................................5
6. LIFE OF THE AGREEMENT......................................................................................5
7. TERMINATION BY LICENSOR....................................................................................6
B. DISPOSITION OF PRODUCTS ON HAND UPON TERMINATION........................................................6
9. PATENT PROSECUTION AND MAINTENANCE......................................................................7
10. WARRANTY BY LICENSOR....................................................................................8
11. AFFIRMATIONS BY LICENSOR................................................................................9
12. PRIOR AGREEMENTS.......................................................................................10
13. INFRINGEMENT..........................................................................................@10
WAIVER................................................................................................@11
15. ASSIGNABILITY.........................................................................................@12
16. INDEMNITY..............................................................................................12
17. LATE PAYMENTS.........................................................................................@12
18. NOTICES................................................................................................12
19. FOREIGN LAWS..........................................................................................@13
20. GOVERNING LAWS........................................................................................@14
21. MISCELLANEOUS.........................................................................................@14
LICENSE AGREEMENT
This LICENSE AGREEMENT is made and is effective as of October 1, 1992
(the "Effective Date") by and between the UNIVERSITY OF UTAH RESEARCH
FOUNDATION, having a principal place of business at 000 Xxxxxx Xxx, Xxxxx 000,
Xxxx Xxxx Xxxx, XX, 00000, hereinafter referred to as "LICENSOR", and IOMED,
INC., having a principal place of business at 0000 Xxxx 0000 Xxxxx, Xxxxx X,
Xxxx Xxxx Xxxx, XX 00000, hereinafter referred to as "LICENSEE".
W I T N E S S E T H:
WHEREAS, certain inventions, as listed in Exhibit "All and hereinafter
collectively referred to as "the Inventions", were made in the course of
research at the University of Utah by **** and
are covered by LICENSORIS PATENT RIGHTS as defined below;
WHEREAS, LICENSOR is desirous that the Inventions be developed and
utilized to the fullest extent so that the benefits can be enjoyed by the
general public; and
WHEREAS, LICENSOR and LICENSEE (hereinafter "the Parties") are party to
several agreements covering the Inventions dated ****, and the Parties wish to
terminate those agreements and to replace them with an agreement which better
suits the needs of their relationship;
NOW THEREFORE, for and in consideration of the covenants, conditions
and undertakings hereinafter set forth, it is agreed by and between the parties,
as follows:
1. DEFINITIONS
1.1 "LICENSORIS PATENT RIGHTS", as used herein, means patent rights to
any subject matter contained in the invention disclosures listed in Exhibit A
and claimed in or covered by the pending or issued U.S. and/or foreign patents
and applications recited in Exhibit "Bl' assigned to LICENSOR; any continuing or
divisional applications thereof assigned to LICENSOR; and any patents issuing on
said applications, continuing or divisional applications including reissues
assigned to LICENSOR.
1.2 "PRODUCTS" as used herein shall mean power supply units and
electrode kits for iontophoretic drug delivery; Utah Artificial Arms and
ProControls where such products are manufactured by or where such products are
manufactured for LICENSEE to LICENSEE'S design and specifications, whether
Covered By LICENSOR'S PATENT RIGHTS or not.
1.3 "...Covered By...", as used herein, means PRODUCTS that when made,
used, or sold would constitute, but for the license 2 granted to LICENSEE
pursuant to this Agreement, an infringement of any claim or claims of LICENSOR'S
PATENT RIGHTS.
1.4 --NET SALES", as used herein, means sales revenue received by
LICENSEE for "PRODUCTS" sold by LICENSEE ****.
2. GRANT
2.1 LICENSOR hereby grants to LICENSEE an exclusive license under
LICENSORIS PATENT RIGHTS to make, have made, use, and sell PRODUCTS throughout
the world where LICENSOR may lawfully grant such a license.
2.2 LICENSEE shall have full and exclusive right to all LICENSOR'S
PATENT RIGHTS with right to sell, sublicense or crosslicense under any terms to
any party with no consideration due to LICENSOR except as specifically set forth
in Paragraphs 3.1 and 3.2.
2.3 LICENSEE agrees to provide LICENSOR with copies of all such
sublicenses or cross-licenses, and LICENSOR agrees to keep such copies
confidential per Paragraph 4.
2.4 Pursuant to Paragraph 2.2, LICENSOR further agrees that LICENSEE
may specifically enter into a royalty-free cross-licensing agreement covering
any or all of the LICENSOR'S PATENT RIGHTS with ****.
2.5 Should this Agreement terminate for whatever reason, LICENSOR
agrees to negotiate in good faith with any sublicensee or
cross-licensee per Paragraph 2.2 or 2.3 in order for a
continuation of its rights on terms and conditions similar to
those granted LICENSEE. 2.6 LICENSOR reserves the right to use
the Inventions for educational and research purposes at the
University of Utah.
3. ROYALTIES
3.1 As consideration for this license, LICENSEE shall pay to LICENSOR
an earned royalty of **** of NET SALES for the life of this Agreement. All
monies due to LICENSOR shall be payable in United States funds. Royalties
accruing to LICENSOR shall be paid to LICENSOR within Forty-Five (45) Days
following the calendar quarter in which NET SALES are made.
3.2 ****.
4. CONFIDENTIALITY
4.1 LICENSEE acknowledges that LICENSOR is subject to the Utah
Govermental Records Access and Management Act (GRAMA) and that pursuant to
GRAMA, confidential information of LICENSEE dis- closed to LICENSOR must be in
written or other tangible form and 4 appropriately marked as proprietary. In
addition a claim stating the reasons supporting such business confidentiality
must also accompany the confidential information (Utah Code Annotated 63-2-308).
LICENSOR agrees to keep such confidential information confidential to the extent
allowable under the applicable law.
5. BOOKS AND RECORDS
5.1 LICENSEE shall keep books and records accurately showing all
PRODUCTS manufactured, used, or sold under the terms of this Agreement. Such
books and records shall be open to inspection by representatives or agents of
LICENSOR at reasonable times and after reasonable advance notice, for the
purpose of verifying the accuracy of the quarterly reports and the royalties due
or paid.
5.2 The fees and expenses of the representatives performing such an
examination shall be borne by LICENSOR. 5.3 These books and records required
herein shall be preserved for at least Five (5) Years from the date of the
royalty payment to which they pertain.
6. LIFE OF THE AGREEMENT
6.1 This Agreement shall be in full force and effect from the Effective
Date and shall remain in effect until September 30, 2007; unless otherwise
terminated by operation of law or by acts of the parties in accordance with the
terms of this Agreement. After September 30, 2007, LICENSEE shall have a fully
paid-up 5
license to practice LICENSOR'S PATENT RIGHTS pursuant to Article 2 without any
further consideration to LICENSOR.
7. TERMINATION BY LICENSOR
7.1 It is expressly agreed that if LICENSEE should fail to make any
payment at the time that the same should be due or if LICENSEE should violate or
fail to perform any material covenant, condition, or undertaking- of this
Agree@.;,ient on its part to be performed hereunder, then and in such event
LICENSOR may give written notice of such default to LICENSEE. If LICENSEE should
fail to repair such default within Sixty (60) Days of such notice or, in the
alternative, to request Arbitration in accordance with the rules of the American
Arbitration Association, LICENSOR shall have the right to terminate this
Agreement and the license granted herein-by written notice to LICENSEE. Upon
such notice of termination, this Agreement shall automatically terminate. Such
termination shall not relieve LICENSEE of its obligation to pay any royalty due
or owing at the time of such termination and shall not impair any accrued right
of LICENSOR. LICENSEE shall pay all attorney's fees and costs incurred by
LICENSOR in enforcing any obligation of LICENSEE or accrued right of LICENSOR
after termination.
8. DISPOSITION OF PRODUCTS ON HAND UPON TERMINATION
8.1 Upon termination of this Agreement by LICENSOR., LICEN- SEE shall
provide LICENSOR with a written inventory of all PRODUCTS in process of
manufacture, in use or in stock and shall have the privilege of disposing of
such PRODUCTS, but not more, within a period of Ninety (90) Days, provided,
however, that LICENSEE shall pay royalties thereon and shall render reports
thereon in the manner herein provided.
9. PATENT PROSECUTION AND MAINTENANCE
9.1 LICENSEE shall diligently prosecute and maintain LICENSOR'S
PATENT RIGHTS usingfcounsel of its choice and after due consultation with
LICENSOR. LICENSEE shall provide LICENSOR with copies of all relevant
documentation so that LICENSOR may be informed and apprised of the continuing
prosecution, and LICENSOR agrees to keep this documentation confidential to
the extent allowable under the law.
9.2 Pursuant to Paragraph 9.1 above LICENSEE shall be able .to
exercise sole and reasonable judgment in its decisions regarding the
prosecution and maintenance of LICENSOR'S PATENT RIGHTS. Should LICENSEE
decide to abandon the prosecution, maintenance or reinstatement of LICENSOR'S
PATENT RIGHTS, it shall notify LICENSOR of such decision within Forty Five
(45) Days of any applicable deadline. LICENSOR shall then have the opportunity
to take over such prosecution, maintenance or reinstatement at its own
expense. LICENSEE shall have no further rights in any patents on which
LICENSOR takes over the prosecution, maintenance or reinstatement unless
LICENSEE requests such rights and reimburses LICENSOR for costs incurred.
9.3 Subject to Paragraphs 9.1 and 9.2, LICENSEE agrees to pay all costs
and legal fees incurred for the prosecution, maintenance, defense, reinstatement
and taxes for such patents. LICENSOR agrees to reimburse LICENSEE for **** of
such reasonable costs in excess of **** per year. Such reimbursements shall not
exceed **** in any one year. Such reimbursements may be offset against earned
royalty payments due LICENSOR, ****. Such reimbursement shall be on a pro rata
basis for any partial year this Agreement is in effect.
10. WARRANTY BY LICENSOR
10.1 LICENSOR warrants that it has the lawful right to grant this
license.
10.2 LICENSOR makes no express or implied warranties of merchantability
or fitness of the Inventions for a particular purpose.
10.3 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by LICENSOR as to the
validity or scope of any LICENSOR'S PATENT RIGHTS;
or
(b) a warranty or representation that anything made,
used, sold or otherwise disposed of under any
license granted in this Agreement is or will be
free from infringement of patents of third parties;
or
(c) an obligation to bring or prosecute actions or
suits against third parties for patent infringement
except as provided herein; or 8 (d) conferring by
implication, estoppel or otherwise any license or
rights under any patents of LICENSOR other than
LICENSOR'S PATENT RIGHTS as defined herein.
11. AFFIRMATIONS BY LICENSOR
11.1 LICENSOR affirms that to the best of its knowledge, other than
what has already been disclosed to LICENSEE per Exhibit "D", no invention
disclosures have been made to LICENSOR or the University of Utah Technology
Transfer Office, patents or patent applications pending relating to the PRODUCTS
to which LICENSEE may have certain rights under the agreements dated ****.
11.2 If LICENSOR becomes aware of any new invention disclosures with
creation dates prior to the Effective Date of this Agreement which LICENSEE may
have had rights to under the agreements referred to in Paragraph 11.1, LICENSOR
shall inform LICENSEE of such inventions. LICENSEE shall have Forty Five (45)
days to inform LICENSOR that it wants to include the rights to such inventions
in this Agreement.
11.3 Provided that this Agreement is currently in effect and remains in
effect for Fifteen (15) Years ending September 30, 2007, LICENSOR affirms the
assignment of any patents listed in Exhibit B.
12. PRIOR AGREEMENTS
12.1 The Parties agree to the following:
(a) ****;
(b) This Agreement embodies the entire understanding of the
parties and shall supersede all previous communications,
representations or understandings either oral or written
between the parties relating to the subject matter hereof.
13. INFRINGEMENT
13.1 In the event that LICENSEE or LICENSOR learn of infringement of
any of LICENSOR'S PATENT RIGHTS licensed under this Agreement, they shall call
such infringement to the attention of the other party thereto in writing and
shall provide the other party with evidence of such infringement. LICENSOR and
LICENSEE shall cooperate and shall then attempt to terminate such in fringement.
In the event the Parties fail to xxxxx the infringing activity within Ninety
(90) Days, LICENSEE or LICENSOR may bring suit for patent infringement, naming
the other as nominal party plaintiff.
13.2 Any legal action as is brought shall be at the expense of the
party by whom suit is filed, hereinafter referred to as the Litigating Party.
Any damages or costs recovered by the Litigating Party in connection with TDluch
infringement, after first reimbursing it for its costs and expenses of the
lawsuit, shall be equally divided between LICENSEE and LICENSOR except where
LICENSEE is the Litigating Party. In that case LICENSOR shall receive a royalty
per this Agreement from such damages and costs recovered with LICENSEE retaining
the remainder.
13.3 LICENSEE and LICENSOR agree to cooperate with the other in
litigation proceedings instituted hereunder but at the expense of the Litigating
Party. Such litigation shall be controlled by the Litigating Party. LICENSOR or
LICENSEE at their own expense, may be represented by counsel of their choice
pursuant to any suit brought by the Litigating Party.
14. WAIVER
14.1 It is agreed that no waiver by either party hereto of any breach
or default of any of the covenants or agreements herein set forth shall be
deemed a waiver as to any subsequent and/or similar breach or default.
15. ASSIGNABILITY
15.1 This Agreement is binding upon and shall inure to the benefit of
LICENSOR, its successors and assigns, but shall be personal to LICENSEE and
assignable by LICENSEE only with the written consent of LICENSOR; provided,
however, that LICENSEE, without consent, may assign or sell the same in
connection with the transfer or sale of all or substantially all of its business
relating- to its interest in LICENSOR'S PATENT RIGHTS as d-efin(@d herein or in
the event of merger or consolidation with another company.
16. INDEMNITY
16.1 LICENSEE agrees to indemnify, hold harmless and defend LICENSOR,
its officers, employees, and agents, against any and all claims, suits, losses,
damage, costs, fees and expenses resulting from or arising out of exercise of
this license.
17. LATE PAYMENTS
17. 1 In the event royalty payments or f ees are not -received by
LICENSOR when due, LICENSEE shall pay to LICENSOR interest charges at the rate
of **** on the total royalties or fees due for the reporting period.
18. NOTICES
18.1 Any payment, notice or other communication required or permitted
to be given to either party hereto shall be deemed to have been properly given
and to be effective: (a) on the date of delivery if delivered in person; or (b)
on the date of delivery if delivered by courier, express mail service or
first-class certified mail. Such notice shall be sent or delivered to the
respective address given below, or to such other address as it shall designate
by written notice given to the other party as follows:
In the case of LICENSEE:
IOMED, INC.
Attention: President
0000 Xxxx 0000 Xxxxx, Xxxxx X Xxxx Xxxx Xxxx XX 00000
In the case of LICENSOR:
UNIVERSITY OF UTAH TECHNOLOGY TRANSFER XXXXXX 000
Xxxxxx Xxx, Xxxxx 000 Xxxx Xxxx Xxxx, XX 00000
19. FOREIGN LAWS
19.1 LICENSEE agrees to register this Agreement when re- quired by
local/national law, to pay all costs and legal fees connected therewith, and to
otherwise insure that the local/ national laws affecting this Agreement are
fully satisfied. 19.2 LICENSEE further agrees to insure compliance with all
appropriate U.S. laws dealing with the export of technology or technical
information.
20. GOVERNING LAWS
20.1 This Agreement shall be interpreted and construed in accordance
with the laws of the State of Utah.
21. MISCELLANEOUS
21.1 The headings of the several sections are inserted for Convenience
of reference only and are not intended to be a part of or to affect the meaning
or interpretation of this Agreement. 21.2 This Agreement will not be binding
upon the parties until it has been signed hereinbelow by or on behalf of each
party, in which event, it shall be effective as of the date first above written.
21.3 No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed as aforesaid.
21.4 In case any one or more of the provisions contained in this
Agreement shall for any reason be held to be invalid, illegal or unenforceable
in any respect, such invalidity, illegality or unenforceability shall not affect
any other provisions hereof, but this Agreement shall be construed as if such
invalid or illegal or unenforceable provisions had never been contained herein.
IN WITNESS WHEREOF, both LICENSOR and LICENSEE have executed this
Agreement, in duplicate originals, by their respective officers hereunto duly
authorized, on the day and year hereinafter written.
IOMED, INC. UNIVERSITY OF UTAH
RESEARCH FOUNDATION
By: /s/ Xxx X. Xxxxxxxxxxx By: /s/ Xxxxxxx X. Xxxxx
(Signature) (Signature)
Name: Xxx X. Xxxxxxxxxxx Name: Xxxxxxx X. Xxxxx
(Please Print)
Title President Title: President
Date: Date:
